Never too much to learn about trademarks, branding, and the law.

Applying for Trademarks in the U.S. via the Madrid Protocol – Goods and Services

Here is a picture of Madrid, which has little to do with this post, but everything to do with Madrid.

If you are a non-U.S. company or lawyer and have filed or will file for American trademark protection through the Madrid Protocol system, this post is part of a series for you. Since most of my foreign trademark experience took place at the EU trademarks office (OHIM), the issues I choose to address in this series of posts will be pertinent those familiar with the Community Trade Mark (CTM) system, although many will be relevant to all non-U.S. trademark holders. Like all the content on the TM Eye Blog, I provide these posts as information only, and not legal advice. Note that refusals of or oppositions to extensions of protection must be responded to by an attorney licensed to practice law in the U.S.

Goods and services are a common issue faced by extensions of protections in the U.S. Prior to us getting to the issue, it is important for me to provide some background. The goods/services issue is partly due to the fact that the U.S. maintains a “use-based” system of registration, meaning that trademark protection is only granted for goods/services on which the trademark has been used. The practical effects of this are that goods/services claims generally need to be more specific than in, for example, the European CTM system. While a Madrid Protocol extension of protection in the U.S. may be applied for without actual use, the legal strength of the mark is highly linked to the use of that mark vis-à-vis the claimed goods/services.

Even though applications to the US Patent and Trademark Office (USPTO) must be submitted with proof of use of the trademark before a registration is granted, Madrid Protocol applications do not require this proof of use – at least not during the application phase. However, while Madrid Protocol applications have this advantage in the application phase, this advantage quickly disappears in terms of maintenance of the trademark registration. Registrations resulting from an extension of protection are still subject to the same rules of cancellation for abandonment as other U.S. applications, and thus trademarks granted an extension of protection must be used within a reasonable amount of time – or face abandonment and thereafter cancellation. Applications filed via the Madrid Protocol must also file a declaration of a bona fide intention to use the mark in commerce in the U.S., and later a specimen of use between the 5th and 6th years after the USPTO grants the extension of protection.

Most importantly, while a Madrid Protocol registration will allow the trademark holder to oppose other confusingly similar marks at the USPTO, the effectiveness of that registration in infringement proceedings will depend heavily on the use of the mark in commerce. Again, this is because use of the mark is a requirement for trademark protection: even though the USPTO recognizes a quasi exception to the rule for trademark applications, federal trademark law will not allow a trademark holder to get very far in court with a mark which has not been used for the goods or services it has been registered for.

Now that the prelude has been delivered, we can get to the heart of the goods/services issue: most jurisdictions around the world operate on a first-to-register trademarks registry system while the U.S. does not. Many of my counterparts in the EU, for example, share a trademark strategy that is counter to the very core of the use-based system in the U.S.: in a first-to-register jurisdiction, the goal is to name all the possible goods/services which may be offered by the trademark applicant. This is to secure trademark rights for the applicant in the future; the applicant will want trademark protection for whatever goods they decide to produce or services they decide to offer in the future. True, over a longer period of time they will lose protection of the trademark for goods/services which they do not offer, but at least for the first 5 years of the registration (in the CTM system), no use necessarily needs to be made.

In the U.S., the goal in claiming goods/services is to walk the line between an overly specific and overly broad claim. The former will provide a very limited scope of protection for the trademark holder, and the latter will result in a refusal by the USPTO. This strategy can clash with foreign registered trademarks which form the basis of a Madrid Protocol application.

Again using them as an example, many applications for extensions of protection in the U.S. for CTMs face the problem of being too broad, and often face provisional refusals for being too broad. The goods/services then need to be narrowed…but this is difficult in the case where a CTM owner has not yet begun using the mark for certain claimed goods/services. In this case, the goods/services claim should be narrowed down to only those which are currently or will soon be offered in the U.S. under the mark.

To sum up, if you are planning to apply for trademark protection in the U.S. via the Madrid Protocol, be prepared to know exactly what goods/services will be offered, in the U.S., within a reasonable amount of time after the extension of protection is granted.